Patents: Disproving Idea Ownership

Published: October 23, 2000

To opponents of business-methods patents, Jeff Bezos, founder and chief executive of Amazon.com , has become a poster boy for his patent covering a "one click" electronic ordering system. One critic has been Tim O'Reilly, a publisher of software books and online information, who posted an open letter to Mr. Bezos on his Web site last winter.

In the letter, Mr. O'Reilly called the Amazon patent "one more example of an `intellectual property' milieu gone mad," and said it was "a land grab, an attempt to hoodwink a patent system that has not gotten up to speed on the state of the art in computer science."

The letter led to a friendly debate that in turn resulted in the two businessmen joining forces to invest in a new company called BountyQuest. The Boston company introduced a Web site last week, BountyQuest.com, where people and companies can offer rewards for information leading to the de-bunking of a patent.

One of the first bounties posted came from Mr. O'Reilly. And here's the rub: He is offering a $10,000 reward to anyone with proof that Mr. Bezos's one-click patent should be revoked.

"I didn't talk to him directly about it," Mr. O'Reilly said last Wednesday, the day the Web site went into operation. "But others at BountyQuest did, and Jeff is very supportive. He's trying to be forthright because he believes he has a good patent. And if he doesn't, then he'll acknowledge that, too. I commend him for that approach."

Mr. O'Reilly's bounty offer is open until January, and anyone can submit proof that they think invalidates the one-click patent, as long as it meets the 12 technical requirements listed on the site, and proof cited pre- dates the patent, which Mr. Bezos and four other inventors applied for in September 1997.

On its first day of operation, BountyQuest.com had 23 bounty postings, seeking so-called prior art, or the proof that an idea was already in the public domain before a patent was issued. BountyQuest's chief executive, Charles Cella, said that some of the submissions arrived before lunchtime on the site's opening day.

The way the system works is that a company or individual, remaining anonymous to the public, must pay BountyQuest $2,500 to post a bounty on the site. It is up to the person or organization that solicits the patent challenges to evaluate the submitted material and determine its validity. BountyQuest, which is to receive a 40 percent commission on bounties paid, will monitor the process and will be liable to pay the bounty if the posting group cannot or will not pay it to a deserving party.

While Mr. Bezos and Mr. O'Reilly have long agreed to disagree about the one-click patent, they started BountyQuest because they had concluded that there was something wrong with the patent system. They chose to act with an investment in BountyQuest because they agreed with the company's founders that something could be done to resolve questions about business-method patents before the controversy spurs a policy review at the federal Patent and Trademark Office or reaches Congress or the courts.

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"First off, there's such a raft of issues around patents," said Mr. O'Reilly. "I think we need to proceed on multiple fronts. It will take a long time before the courts and Congress sort out the scope of the patent system as regards computer and software patents. Meanwhile, a lot of history and prior art is vanishing in the mists of time."

For all his current interest, Mr. O'Reilly said that he "didn't know anything about the patent system before the one-click issue."

"I started to educate myself," he added, "and what jumped out was the prior art problem — that companies were not citing prior art, or good prior art. The method the Patent Office uses is to look for pieces of paper. But so much prior art is on the Internet, it's not archived, it came and went."

Mr. O'Reilly predicted that submissions to BountyQuest would typically come from professional patent searchers, computer graduate students and professionals involved in software development over the last decade.

He said the reward system would give people incentives "to dig through their archives to find old files, old documents they may have published."

Mr. Cella, a patent lawyer, said the idea for the company came from two patent lawyer colleagues, Matt Vincent and Ed Kelly, after both had been plagued by the challenge of finding prior art.

"I felt there must be information out there, but it was like looking for a needle in a haystack," Mr. Cella said last week. "If you could just get to the right person, it was probably sitting on their desk in their thesis.

"You can hire people to sort through the haystack," he added, "but what we really need is a system that gets the needle to stand up and identify itself, to shout through the hay, `Here I am.' "

The dispute over prior art for software-related inventions has been the main argument of opponents to business-methods patents — along with the fact that many disputed patents appear to fail the government's own requirement that a patent not cover something so obvious that anyone with reasonable skill or experience in a field would naturally come up with the idea.

"That is such a deeper problem," Mr. O'Reilly said. "The Patent Office's idea of what a person of ordinary skill in the art knows or develops is somewhat out of touch with the common sense of most programmers."

Mr. Cella said he hoped his company would "change the patent system without changing the law, without changing the way the business of patenting is done, but make changes in the market-place."

He expects those who offer rewards to be people facing a patent infringement lawsuit, or patent holders trying to enforce a patent, or people about to enter into a patent licensing agreement or buy a patent portfolio.

Mr. Cella and his co-founders posted another of the first bounties on the site: an offer of a reward for information that undermines their own pending patent for a system of "an Internet-based, broadcast reward service for finding prior art relevant to the validity of a patent."

"That was one of the conditions of my investment," Mr. O'Reilly said. Mr. Cella countered: "It was an easy condition to satisfy. Either somebody will knock us out, and that will prove our business method works, or they won't knock us out and that will show how unique our solution is."